Supreme Court to look at “obviousness” in patents

Some patents seem so obvious that we all wonder why they were granted in the …

In a move that could have huge implications for the US patent system, the Supreme Court has agreed to hear arguments in the case of KSR v. Teleflex. The case centers on the question of obviousness: when is a patent so... patently obvious that it should not be granted?

KSR International manufactures gas pedals for a number of GM trucks and SUVs. A few years ago, it came up with an electronic sensor that could automatically adjust the height of a vehicle's pedals to the height of a driver. Teleflex sued KSR, saying that the adjustable pedals infringed on its patent for a similar product.

Over the course of the litigation, KSR raised the question of obviousness. According to a 1952 federal patent law, an invention cannot be patented if a "person having ordinary skill in the art" would consider it obvious. KSR won in the US Court of Appeals for the Federal Circuit, but made the unusual move of appealing the decision to the Supreme Court on the basis that the appeals court did not apply the test of obviousness, and furthermore, has been misapplying federal patent law for years.

Instead, KSR argues that the US Patent and Trademark Office should deny patents in cases where the invention merely combines components performing functions that they were previously known to do.

KSR's petition (PDF) claims that the court uses a lower standard under which an invention cannot be called obvious in the "absence of some proven 'teaching, suggestion, or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed." In other words, if someone dreams up a combination of two existing items (e.g., a gas pedal and an electronic sensor, or a wireless network and e-mail ), a patent should be granted unless there is prior art suggesting that the items could be combined in such a manner. That litmus test disregards the question of obviousness altogether, and as such, KSR believes, ignores the relevant provision of the 1952 law.

KSR has garnered some high-profile friends in its appeal: Microsoft and Cisco have submitted a "friend of the court" brief (PDF) supporting KSR's position. The brief argues that the lower court's test "establishes too lenient a standard for patentability, and it has had a stifling effect on true innovation because it encumbers ideas well beyond the limits imposed by Congress for patentable inventions."

If the Supreme Court restores the test of obviousness to the patent process, it could have huge ramifications for patent law and would be a good first step in a much-needed reform of the US patent system. Patents such as Clear Channel's Instant Live patent, which covers instant CD recordings of live shows, could find themselves in danger of extinction as a result.